Delaware Intellectual Property Litigationhttps://delawareintellectualproperty.foxrothschild.com
Intellectual Property and Antitrust Litigation in DelawareFri, 08 Dec 2017 23:40:20 +0000en-UShourly1https://wordpress.org/?v=4.7.8https://delawareintellectualproperty.foxrothschildblogs.com/wp-content/uploads/sites/17/2016/08/cropped-cropped-favicon-1-32x32.pngDelaware Intellectual Property Litigationhttps://delawareintellectualproperty.foxrothschild.com
3232Subscribe with My Yahoo!Subscribe with NewsGatorSubscribe with My AOLSubscribe with BloglinesSubscribe with NetvibesSubscribe with GoogleSubscribe with PageflakesSubscribe with PlusmoSubscribe with The Free DictionarySubscribe with Bitty BrowserSubscribe with NewsAlloySubscribe with Live.comSubscribe with Excite MIXSubscribe with Attensa for OutlookSubscribe with WebwagSubscribe with Podcast ReadySubscribe with FlurrySubscribe with WikioSubscribe with Daily RotationChief Judge Stark Dismisses Without Prejudice U.S. Patent No. 6,229,366 from Pending Patent Infringement Action Following Reexamination Amendmentshttp://feeds.lexblog.com/~r/DelawareIntellectualPropertyLitigation/~3/wt6-vU9EJxA/
https://delawareintellectualproperty.foxrothschild.com/2017/12/articles/patents/patent-infringement/chief-judge-stark-dismisses-without-prejudice-u-s-patent-no-6229366-from-pending-patent-infringement-action-following-reexamination-amendments/#respondFri, 08 Dec 2017 23:40:20 +0000https://delawareintellectualproperty.foxrothschild.com/?p=2287By Memorandum Order entered by The Honorable Leonard P. Stark in Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc. et al., Civil Action No. 04-1371-LPS (D.Del., December 8, 2017), the Court dismissed without prejudice U.S. Patent No. 6,229,366 (“the ‘366 patent”) from the action, which was filed more than a dozen years ago, given that the U.S. Patent and Trademark Office allowed amended claims during Fairchild’s ex parte reexamination, issued a reexamination certificate and the reexamination amendments effected a substantive change in claim scope. Thus, any cause of action predicated on the original claims of the ‘366 patent was extinguished when the reexamination certificate issued. Id. at *5.

]]>https://delawareintellectualproperty.foxrothschild.com/2017/12/articles/patents/patent-infringement/chief-judge-stark-dismisses-without-prejudice-u-s-patent-no-6229366-from-pending-patent-infringement-action-following-reexamination-amendments/feed/0https://delawareintellectualproperty.foxrothschild.com/2017/12/articles/patents/patent-infringement/chief-judge-stark-dismisses-without-prejudice-u-s-patent-no-6229366-from-pending-patent-infringement-action-following-reexamination-amendments/Chief Judge Stark Denies Mylan Defendants’ Motion to Dismiss or Transfer for Improper Venue Subject to Right to Renew After Venue-Related Discoveryhttp://feeds.lexblog.com/~r/DelawareIntellectualPropertyLitigation/~3/fevGw2ytAsE/
https://delawareintellectualproperty.foxrothschild.com/2017/12/articles/patents/patent-infringement/chief-judge-stark-denies-mylan-defendants-motion-to-dismiss-or-transfer-for-improper-venue-subject-to-right-to-renew-after-venue-related-discovery/#respondFri, 01 Dec 2017 22:53:17 +0000https://delawareintellectualproperty.foxrothschild.com/?p=2280By Memorandum Order entered by The Honorable Leonard P. Stark in Javelin Pharmaceuticals, Inc. et al. v. Mylan Laboratories Limited et al., Civil Action No. 16-224-LPS (D.Del., December 1, 2017), the Court denied without prejudice the motion to dismiss for improper venue or, in the alternative, to transfer venue to the Northern District of West Virginia of Defendant Mylan Laboratories Limited, Mylan, Inc. and Mylan Pharmaceutical Inc. (collectively, the “Mylan Defendants”). In doing so, the Court granted Plaintiffs’ request for venue-related discovery to proceed contemporaneously with the remainder of the case as it proceeds on the merits and ruled that the Mylan Defendants could renew the motion after a period of venue-related discovery. Id. at *1 and 12. The Court also held that Mylan’s venue challenge was not untimely and Mylan did not waive its challenge to venue by failing to press it until after the U.S. Supreme Court decided TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017) because the venue objection was not available until after that decision was rendered. Id. at *2.

In the instant action, following claim construction, the Court allowed Defendants to file a motion for summary judgment of non-infringement. Reckitt Benckiser LLC at *1. After full briefing and a hearing, the Court granted Defendants’ motion for summary judgment of non-infringement finding that “no reasonable factfinder could find that [Defendants’] proposed ANDA product contains two distinct formulations, as required by the asserted claims.” Id. Defendants thereafter sought attorneys’ fees under 35 U.S.C. § 285 contending the case was “exceptional.” Id. at *2.

In considering the motion for attorneys’ fees, the Court noted as follows:

In one way, this case stands out from others: it is an ANDA case that was resolved on summary judgment, a rare occurrence in this Court, which often does not allow summary judgment motions to be filed in an ANDA case. But this fact alone does not make this case per se “exceptional.” That the nature of the narrow dispute presented by the parties turned out to be amenable to summary judgment does not inevitably correlate to an exceptionally weak substantive position or an unreasonable manner of litigation. Id. at *3.

Ultimately, after concluding the totality of the circumstances, the Court concluded that the factors weighing against finding the case exceptional outweighed those in favor. Id. at *7. Accordingly, the Court exercised its discretion to deny the request for attorneys’ fees. Id. at *8.

]]>https://delawareintellectualproperty.foxrothschild.com/2017/10/articles/intellectual-property/chief-judge-stark-denies-prevailing-partys-motion-for-attorneys-fees-and-expenses-in-anda-action/feed/0https://delawareintellectualproperty.foxrothschild.com/2017/10/articles/intellectual-property/chief-judge-stark-denies-prevailing-partys-motion-for-attorneys-fees-and-expenses-in-anda-action/Judge Andrews Finds Plaintiff Proved Infringement of Asserted Claims of Patents-in-Suit Following Three-Day Bench Trial in Hatch-Waxman Actionhttp://feeds.lexblog.com/~r/DelawareIntellectualPropertyLitigation/~3/j2Il5_67Nvg/
https://delawareintellectualproperty.foxrothschild.com/2017/10/articles/patents/patent-infringement/judge-andrews-finds-plaintiff-proved-infringement-of-asserted-claims-of-patents-in-suit-following-three-day-bench-trial-in-hatch-waxman-action/#respondSat, 14 Oct 2017 12:19:25 +0000https://delawareintellectualproperty.foxrothschild.com/?p=2257Following a three-day bench trial in the matter on June 5-7, 2017 and after having considered the entire record in the case and the applicable law, the Court, through Trial Opinion, entered by The Honorable Richard G. Andrews in Orexigen Therapeutics, Inc. v. Actavis Laboratories FL, Inc., Civil Action No. 15-451-RGA (D.Del. October 13, 2017), found that (1) Defendant failed to prove by clear and convincing evidence that claims 26 and 31 U.S. Patent No. 7,462,626 (“the ‘626 patent”), claim 1 of U.S. Patent No. 7,375,111 (“the ‘111 patent”), and claim 11 of U.S. Patent No. 8,916,195 (“the ‘195 patent”) are invalid; and (2) Plaintiff proved by a preponderance of the evidence that Defendant’s ANDA product directly infringes claim 1 of the ‘111 patent and indirectly infringes claims 26 and 31 of the ‘626 patent and claim 11 of the ‘195 patent.

]]>https://delawareintellectualproperty.foxrothschild.com/2017/10/articles/patents/patent-infringement/judge-andrews-finds-plaintiff-proved-infringement-of-asserted-claims-of-patents-in-suit-following-three-day-bench-trial-in-hatch-waxman-action/feed/0https://delawareintellectualproperty.foxrothschild.com/2017/10/articles/patents/patent-infringement/judge-andrews-finds-plaintiff-proved-infringement-of-asserted-claims-of-patents-in-suit-following-three-day-bench-trial-in-hatch-waxman-action/Chief Judge Stark Denies Defendant’s Motion for Summary Judgment in Antitrust Actionhttp://feeds.lexblog.com/~r/DelawareIntellectualPropertyLitigation/~3/o_P0DdUU4Yk/
https://delawareintellectualproperty.foxrothschild.com/2017/10/articles/antitrust-and-patent-misuse/chief-judge-stark-denies-defendants-motion-for-summary-judgment-in-antitrust-action/#respondSat, 07 Oct 2017 18:11:25 +0000https://delawareintellectualproperty.foxrothschild.com/?p=2254By Memorandum Order entered by The Honorable Leonard P. Stark in GN Netcom, Inc. v. Plantronics, Inc., Civil Action No. 12-1318-LPS (D.Del. September 29, 2017), the Court denied Defendant Plantronics, Inc.’s motion for summary judgment which contended that any foreclosure effect of Defendant’s exclusive dealing arrangement with its distributors was negated by Plaintiff GN Netcom, Inc.’s ability to circumvent the exclusive dealing arrangement by accessing the end-users directly. In other words, Plantronics argued that GN could not show substantial foreclosure of the market for the telephone headsets at issue because GN could make sales calls directly to the contact center and office end-users with delivery effected by any of the hundreds of resellers that GN uses, including some of the Plantronics Only Distributors (“PODs”) themselves. Id. at *5. As support for the proposition, Plantronics referred to GN’s recent, successful history of reaching out to end users in this manner (“solution selling”), which resulted in significant “wins” and growth in market share for GN. Id.

The Court, however, noted that “[t]he core question presented by the motion is whether, taking the evidence in the light most favorable to GN, Plantronics has demonstrated that a reasonable juror could find only that GN had adequate, ‘available,’ ‘viable,’ and/or ‘effective,’ alternative means of distribution, notwithstanding Plantronics’ POD program. The ‘mere existence of other avenues of distribution’ is not enough on its own. Instead, there must be an ‘assessment of [the alternative means’] overall significance to the market,’ and such alternative means must be ‘practical or feasible in the market as it exists and functions.” Id. at *6.

Ultimately, the Court found that Plantronics could not meet the summary judgment standard to show that the only reasonable conclusion to be drawn from the record is that distribution through PODs is an adequately available, viable and/or effective means of distribution for GN. Id. at *8-9. Although the Court noted the record contains substantial evidence from which a jury might reasonably find that GN could adequately compete for business, Plantronics failed to show that was the only conclusion a jury could reasonably reach. Id. at *9. Thus, summary judgment was denied.

An interesting and notable take away from this case is that, due to certain discovery spoliation by Plantronics concerning the deletion of emails, the Court had previously imposed monetary and evidentiary sanctions on Plantronics, including a permissive adverse inference instruction to be given at trial and being required to seek leave of Court before filing any motion for summary judgment – given the impact that the spoliation and permissive adverse inference could have on the resolution of any motion for summary judgment. See id. at *2. It leaves one wondering whether this would have been a case appropriate for summary judgment but for the sanctions and adverse inferences against Plantronics due to its spoliation.

]]>https://delawareintellectualproperty.foxrothschild.com/2017/10/articles/antitrust-and-patent-misuse/chief-judge-stark-denies-defendants-motion-for-summary-judgment-in-antitrust-action/feed/0https://delawareintellectualproperty.foxrothschild.com/2017/10/articles/antitrust-and-patent-misuse/chief-judge-stark-denies-defendants-motion-for-summary-judgment-in-antitrust-action/Chief Judge Stark Grants IBM’s Motion for Summary Judgment of No Anticipationhttp://feeds.lexblog.com/~r/DelawareIntellectualPropertyLitigation/~3/N8m3bm5EMqw/
https://delawareintellectualproperty.foxrothschild.com/2017/09/articles/patents/patent-infringement/chief-judge-stark-grants-ibms-motion-for-summary-judgment-of-no-anticipation/#respondSat, 23 Sep 2017 21:38:19 +0000https://delawareintellectualproperty.foxrothschild.com/?p=2250By Memorandum Opinion entered by The Honorable Leonard P. Stark in International Business Machines Corp. v. The Priceline Group Inc. et al., Civil Action No. 15-137-LPS (D.Del. September 18, 2017), the Court, among other things, granted plaintiff International Business Machines Corporation’s (“IBM’s”) motion for summary judgment on no anticipation of the asserted claims of U.S. Patent No. 5,796,967 (“the ‘967 patent”) in light of the Apple HyperCard System.

IBM asserted that Defendants could not show by clear and convincing evidence that the system was known or in prior use before the effective filing date of the ‘967 patent because evidence was lacking that the HyperCard system was (1) connected to a network, or (2) configured in the manner that Defendants’ expert relied on in his anticipation theories. Id. at *13. The Court found that Defendants did not provide substantial evidence that could support a jury finding that the HyperCard System, as disclosed by the first edition of the Goodman Handbook (the only handbook pre-dating the patent), was enabling. Id. at *16. The Court reasoned that the handbook only addressed what could be done in the future and never discussed any configurations that Defendants’ expert relied on or identified as a specific network to which the system could connect. Id.

]]>https://delawareintellectualproperty.foxrothschild.com/2017/09/articles/patents/patent-infringement/chief-judge-stark-grants-ibms-motion-for-summary-judgment-of-no-anticipation/feed/0https://delawareintellectualproperty.foxrothschild.com/2017/09/articles/patents/patent-infringement/chief-judge-stark-grants-ibms-motion-for-summary-judgment-of-no-anticipation/Judge Sleet Invalidates Patents-in-Suit After Finding of Obviousness and Enters Judgment in Favor of Alleged Infringer in Hatch-Waxman Actionhttp://feeds.lexblog.com/~r/DelawareIntellectualPropertyLitigation/~3/tsAPcd3IEWw/
https://delawareintellectualproperty.foxrothschild.com/2017/09/articles/patents/patent-infringement/judge-sleet-invalidates-patents-in-suit-after-finding-of-obviousness-and-enters-judgment-in-favor-of-alleged-infringer-in-hatch-waxman-action/#respondSat, 09 Sep 2017 12:56:01 +0000https://delawareintellectualproperty.foxrothschild.com/?p=2246Following a five-day bench trial in the matter in February 2017 and after having considered the entire record in the case and the applicable law, the Court, through Memorandum, entered by The Honorable Gregory M. Sleet in Tris Pharma, Inc. v. Actavis Laboratories FL, Inc., Civil Action No. 14-1309-GMS (consolidated) (D.Del. September 6, 2017), entered judgment in favor Defendant Actavis Laboratories FL, Inc. (“Actavis”) after concluding that all asserted claims of the patents-in-suit are invalid due to obviousness. The patents-in-suit in the action are U.S. Patent Nos. 8,465,765 (“the ‘765 patent”), 8,563,033 (“the ‘033 patent”), 8,778,390 (“the ‘390 patent”), 8,956,649 (“the ‘649 patent”) and 9,040,083 (“the ‘083 patent”).

After assessing the four considerations of an obviousness analysis – (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed subject matter and the prior art; and (4) secondary considerations of nonobviousness, such as commercial success, long-felt but unsolved need, failure of others, acquiescence of others in the industry that the patent is valid, and unexpected results – the Court concluded that the asserted claims are invalid as obvious under 35 U.S.C. §103. Id. at 26-45.